On March 22, 2017, the United States Supreme Court in the case of Star Athletica LLC v Varsity Brands LLC affirmed a decision of the Sixth Circuit Court of Appeals that copyright protection could exist in surface ornamentation of cheerleader’s uniforms.

The case therefore addressed the long-stated conundrum of why is it that one can obtain copyright protection for the design of a fabric used in clothing but not for the design of the clothing itself.

Under U.S. law, copyright protection for useful articles is limited by 17 USC 101 as follows:

the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article. (Emphasis added)

Useful articles are defined as:

an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a “useful article”.

The requirement that design incorporates pictorial, graphic, or sculptural features that can be identified separately and can exist independently of the utilitarian aspects of the article is referred to as the separability doctrine.

In Star Athletica, the Supreme Court considered the applicability of the separability doctrine to surface ornamentation of cheerleader’s uniforms.

As noted by the Court, the copyrights in question were for two-dimensional designs appearing on the surface of cheerleader’s uniforms and other garments. These designs are primarily “combinations, positionings, and arrangements of elements” that include “chevrons . . . , lines, curves, stripes, angles, diagonals, inverted [chevrons], coloring, and shapes.” Because the case had arisen from an appeal from a summary judgment that the copyright claim was for an unprotectable useful article, the underlying question of whether the designs were sufficiently ‘original” to qualify for copyright protection has not yet been addressed and the case has proceeded on the as-yet untried assumption that the features noted above have sufficient originality to qualify for protection.

Justice Thomas, with whom Chief Justice Roberts and Justices Alito, Sotomayor and Kagan agreed, gave the judgment of the Court.

Before engaging in a separability analysis, Justice Thomas first considered whether such analysis was required in view of the copyright owner’s argument that the designs for which they claimed protection were surface decorations that were “two-dimensional graphic designs that appear on useful articles,” but are not themselves designs of useful articles” and that, this being the case, no separability analysis was required. Justice Thomas rejected this argument as being inconsistent with the language of the statute which requires separability analysis for any “pictorial, graphic, or sculptural features” incorporated into the “design of a useful article” because the statute provides that the “design of a useful article” can include two-dimensional “pictorial” and “graphic” features.

Once the necessity for a separability analysis had been established, Justice Thomas went on consider the two elements of the separability requirement set out in the statute.

The first requirement (that pictorial, graphic, or sculptural features can be identified separately) was, in his view, not onerous. “The decisionmaker need only be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities. Such features could be identified here.

The second requirement (that the pictorial, graphic, or sculptural features are capable of existing independently of, the utilitarian aspects of the article) is, Justice Thomas noted, ordinarily more difficult to satisfy because the “feature must be able to exist as its own pictorial, graphic, or sculptural work … once it is imagined apart from the useful article” and such imagining must not itself be as or part of a useful article. Therefore,

The ultimate separability question… is whether the feature for which copyright protection is claimed would have been eligible for copyright protection as a pictorial, graphic, or sculptural work had it originally been fixed in some tangible medium other than a useful article before being applied to a useful article.

Applying this test to the surface decorations on the cheerleading uniforms is straightforward… if the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied in another medium—for example, on a painter’s canvas—they would qualify as “two-dimensional…works of…art,” §101. And imaginatively removing the surface decorations from the uniforms and applying them in another medium would not replicate the uniform itself. Indeed, respondents have applied the designs in this case to other media of expression—different types of clothing—without replicating the uniform…The decorations are therefore separable from the uniforms and eligible for copyright protection.

He concluded:

To be clear, the only feature of the cheerleading uniform eligible for a copyright in this case is the two-dimensional work of art fixed in the tangible medium of the uniform fabric. Even if respondents ultimately succeed in establishing a valid copyright in the surface decorations at issue here, respondents have no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations in this case appear. They may prohibit only the reproduction of the surface designs in any tangible medium of expression—a uniform or otherwise.

Justice Ginsburg concurred in the outcome but not the reasoning. She noted that the copyright registration certificates for the works in question stated that they were two dimensional artwork. In her view, the designs in question were “standalone pictorial and graphical works first created in two dimensional graphic designs and later applied to various items of clothing As such, the designs were not for useful articles and so there was no need to address the separability issue.

In dissent, Justice Breyer (with whom Justice Kennedy agreed) pointed out that repeated attempts to persuade Congress to provide “full copyright protection to the fashion industry” had failed, but this had not prevented the fashion industry from thriving. In his view, the majority opinion looked at the claimed design “as if it were no more than a design for a bit of cloth” which lost sight of the principle that one may not claim a copyright in a useful article merely by creating a replica of that article in some other medium”, because one cannot obtain a copyright that would give the holder any rights in the useful article that inspired it.